1. IP Basics From a Litigator’s Perspective Nick Nicholas Jackson Walker L.L.P. 1401 McKinney Street Suite 1900 Houston, Texas 77010 Work: 713-752-4443 Cell: 281-636-2612

2. Two Sides of the Coin  Prosecution  Litigation

3. Three Types of Intellectual Property  Copyrights  Trademarks  Patents  Trade Secrets*

4. Copyright A form of protection provided by Title 17 to the authors of original works of authorship including literary, dramatic, musical, artistic and certain other intellectual works. Generally speaking, the protection lasts from the moment of creation to 70 years after the author’s death (latest). Works for Hire or Anonymous works are protected 95 years from publication or 120 years from creation.

5. § 102 - Copyrightable Works  Literary works  Musical works  Dramatic works  Pantomimes and choreographic works  Pictorial, graphic and sculptural works  Motion pictures and audio/visual works  Sound recordings  Architectural work

6. § 106 - Exclusive Rights  Reproduction  Adaptation  Distribution  Public performance  Public display  Attribution and integrity ( § 106A)  Importation ( § 602)

7. § 408 - Registration No, it is not a requirement. Yes, you want to do it  Required before an infringement suit may be filed for works of US origin  If done before or within 5 years after publication, it establishes prima facie evidence of the validity of the copyright, and of the facts stated in the certificate  If within 3 months after publication, or before infringement, statutory damages and attorney’s fees are available. Otherwise, only actual damages and profits are available  Required for registration with the US Customs Service for protection against the importation of infringing copies  Can be done at any time within the life of the copyright  Relatively easy (can do online) and inexpensive (as low as $35) see USCO Circular No. 4

8. Is he going to read every code provision ?

9. PlaintiffDefendant

10. Plaintiff’s Case  Introduces her copyright registration into evidence  Proves defendant copied too much of the registered work  Proves her damages  Proves defendant’s profits

11. Defenses - Attack Validity  Copyright has expired  Was abandoned by first publication before 1978 without copyright notice  Insufficiently original  Unprotectectable because of its unlawful content (an unlawful derivative work)  Uncopyrightable factual compilation  Unprotectable functional work (business form)  Registration was obtained by knowing fraud

12. Defenses  Independent creation  Accused copying is outside the 3 year statute of limitations  Only copied unprotectable material  De minimis copying  Fair Use Doctrine

13. § 107 – Limitations on Exclusive Rights: Fair Use  For purposes such as criticism, comment, news reporting, teaching, scholarship, or research; the purpose and character of the use (i.e., commercial or nonprofit educational purpose) the purpose and character of the use (i.e., commercial or nonprofit educational purpose) the nature of the copyrighted work; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for, or value of, the copyrighted work. the effect of the use upon the potential market for, or value of, the copyrighted work.

14. Damages  Injunctive Relief ( § 502)  Impounding and Disposition of Infringing Articles ( § 503)  Seizure and Forfeiture ( § 509)  Importation Disposition (§ 603)

15. § 504 – $$$$$ - Money  The owner is entitled to recover the actual damages suffered as a result of the infringement, and any profits of the infringer (not already included in actual damages). The owner presents proof of infringer’s gross revenue and then the burden shifts to the infringer to prove deductible expenses and any profit attributable to factors other than the copyrighted work  The owner, at any time before final judgment, may elect to recover an award of statutory damages in a sum of not less than $750 or more than $30,000 as the Court considers just  If owner proves that the infringement was committed willfully, the court may increase the award of statutory damages to not more than $150,000

16. United States Copyright Office www.copyright.gov

17. Trademark A form of protection provided by Title 15 (The Lanham Act) to the owner of a federally registered Trademark. Generally permits the owner the right to exclude others from using the same or similar marks on same or similar goods or services in a defined geographic area or a particular field of use. State (Texas Trademark Act, Title, 2, Chapter 16, Business & Commerce Code) and common law protection provided as well.

18. Other Marks Trademark Service Mark

19. What Can Be Trademarked? Any identification of goods or services that indicates the source and distinguishes them from the goods or services of others To obtain the exclusive right to use a mark, you must be the first to properly use it in your trade area, or file a federal trademark application that issues as a registration

20. What Can Be Trademarked?  Word  Symbol  Color  Smell  Name ( including Domain )  Design  Sound  Combinations Trade Dress

21. Trademark Categories  Generic Terms - are not protectable and can be used by anyone  Descriptive Terms – are only protectable if the public uses the term to distinguish your goods and services from your competitors (jury question)

22. Trademark Categories  Suggestive Terms – suggest a quality or characteristic, and are protectable if they are not primarily descriptive  Arbitrary or Fanciful Terms – have no relationship to the goods or services and are very protectable

23. Yes, You Want to Register Your Trademark  Provides constructive notice to all others  Provides presumption of ownership and exclusive right to use nationwide on goods and services listed  Basis for foreign registrations  Can be field with US Customs Service to prevent wrongful importation  Valid for 10 years but renewable as long as the mark is still in use

24. Plaintiff’s Case  Plaintiff must prove: Priority Priority The mark is protectable The mark is protectable Defendant’s mark is likely to confuse the relevant public into thinking Defendant’s goods or services are affiliated with the Plaintiff’s Defendant’s mark is likely to confuse the relevant public into thinking Defendant’s goods or services are affiliated with the Plaintiff’s  The Jury Question: Do you find from a preponderance of the evidence that potential customers are likely to be confused between Plaintiff’s mark ABC and Defendant’s mark AZC

25. Defenses  Invalidity  Laches  Fair Use occurs when a descriptive mark is used in good faith for its primary (rather than secondary) meaning, and no consumer confusion is likely to result “all bran”

26. Defenses  Nominative Use occurs when use of the mark is necessary for purpose of identification  “playboy playmate”  “New Kids on the Block”

27. Defenses  Parody – occurs when use of the mark is for artistic or editorial parodies Spa’am

28. Damages  Injunctive relief, including possible seizure of goods and counterfeit marks, and means of making such marks (§ 1116)  Defendant’s profits, Plaintiff’s actual damages, costs and attorney’s fees (§ 1117(a))  Treble damages (profits or damages whichever is greater) for use of counterfeit mark (§ 1117(b))  Statutory damages for use of counterfeit marks Not less than $500 or more than $100,000 per counterfeit mark per type of goods or services, or Not less than $500 or more than $100,000 per counterfeit mark per type of goods or services, or If use of counterfeit mark was willful, not more than $1 million per counterfeit mark per type of goods or services, as the court considers just (§ 1117(c)) If use of counterfeit mark was willful, not more than $1 million per counterfeit mark per type of goods or services, as the court considers just (§ 1117(c))  Statutory damages of not less than $1,000 and not more than $100,000 per domain name (§ 1117(d))

29. United States Patent & Trademark Office www.uspto.gov/main/trademarks

30. Patents Title 35 provides a Patent Owner the exclusive right to make, use, sell or import the covered invention. Generally speaking, the protection lasts 20 years from the date of filing. A patent only protects what is actually described by the Claims.

31. What Is Patentable?  To be patented, an invention only needs to be useful, novel and non- obvious Process Process Machine Machine Software Software Method of manufacture Method of manufacture Method of doing business Method of doing business Composition of matter Composition of matter Improvement on existing thing Improvement on existing thing

33.  Patent Name and Number  Title  Inventors  Assignments (pre-issue)  Application No.  Subject Matter Categories  Filed date and History  Field of Search  Prior Art References  PTO Examiners  Abstract – Usually includes a brief explanation of how the invention works and why it is useful

34.  Specification - describes the invention or technology in words sufficient to satisfy the specificity requirement (description must allow persons skilled in the field to practice the invention) Field of the Invention Field of the Invention Background of the Prior Art – discusses the state and limitations of current technology, and shows the advantages provided by the new invention Background of the Prior Art – discusses the state and limitations of current technology, and shows the advantages provided by the new invention Objects of the Invention Objects of the Invention Brief Description of the Drawings Brief Description of the Drawings Description of Preferred Embodiment – describes in detail the processes and components visible in the drawings, and the inventor’s favored implementation of the invention Description of Preferred Embodiment – describes in detail the processes and components visible in the drawings, and the inventor’s favored implementation of the invention

35. But The Claims Are What Matter  The Claims define what the patent “covers” and what conduct or activity will infringe  “What is claimed is…”  Claim Numbers  Claim Construction

36. The No. 1 Rule in Patent Litigation Know Your Local Rules!

37. Life Cycle of a Typical Patent Infringement Lawsuit  P’s Complaint  Initial Case Management Conference and Initial Disclosures  P’s Disclosure of Asserted Claims and Infringement Contentions with document production  D’s Invalidity Contentions with document production  Parties exchange Proposed Terms and Claim Elements for Construction  Parties exchange Preliminary Claim Constructions and Extrinsic Evidence  P limits the number of asserted claims (if Court orders)  Parties file Joint Claim Construction  P files Opening Claim Construction Brief  D files Responsive Claim Construction Brief  Parties file Claim Construction Chart  Claim Construction (Markman) hearing  Claim Construction Ruling  It took 3 years to get to this point in my last case!

38. But It Still Goes On  D files Final Invalidity Contentions  D makes Disclosure relating to Willfulness  All Fact Discovery completed  Parties disclose Expert Witnesses and serve Expert Reports Invalidity Invalidity Non-Infringement Non-Infringement  All Expert Discovery completed  Dispositive Motions  Pretrial Conference  Pretrial Disclosures  Pretrial Motions  Jury Selection  Trial

39. Plaintiff’s Case  Plaintiff introduces his Patent into evidence  Plaintiff must prove that the accused instrumentality practices every element of the claim, through Literal Infringement or the Doctrine of Equivalents If the Patent Claim contains Elements A, B and C, but the accused instrumentality only practices A and B, then there is no infringement If the Patent Claim contains Elements A, B and C, but the accused instrumentality only practices A and B, then there is no infringement  Plaintiff prove his damages  Plaintiff introduces his evidence of willfulness

40. Defenses – Attack Validity  § 102 - Novelty and Loss of Right to Patent If the claimed invention is identical to the subject matter disclosed or embodied in the prior art reference, then the claim is anticipated and invalid for lack of novelty If the claimed invention is identical to the subject matter disclosed or embodied in the prior art reference, then the claim is anticipated and invalid for lack of novelty Prior knowledge, use, patents, applications and/or publications Prior knowledge, use, patents, applications and/or publications  § 103 – Non-obvious Subject Matter If the difference between the subject matter sought to be protected (i.e. the new invention) and the prior art are such that that the subject matter as a whole would have been obvious to a person having ordinary skill in the art, then the claim is invalid for obviousness If the difference between the subject matter sought to be protected (i.e. the new invention) and the prior art are such that that the subject matter as a whole would have been obvious to a person having ordinary skill in the art, then the claim is invalid for obviousness Even Better – Prove Non-Infringement

41. Damages   Injunctive relief (§ 283)   Damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use, together with interest and costs. If damages are not found by the jury, then court shall assess them, but either way the court may treble the damages if the infringement is found to be willful (§ 284)   Attorney fees (§ 285)   Plaintiff cannot recover for infringement committed more than 6 years prior to the filing of the complaint (§ 286)

42. United States Patent & Trademark Office www.uspto.gov/main/patents